Delhi High Court
M/S Zine Davidoff S.A vs Union Of India And Anr on 22 April, 2025
Author: Amit Bansal
Bench: Amit Bansal
$~50
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of decision: 22nd April, 2025
+ W.P.(C)-IPD 57/2021
M/S ZINE DAVIDOFF S.A. .....Petitioner
Through: Mr. Ranjan Narula, Mr. Shakti Priyan
Nair and Mr. Parth Bajaj, Advocates.
versus
UNION OF INDIA AND ANR .....Respondent
Through: Mr. L.B. Rai, Mr. Ayush Pandita and
Mr. Satvik Rai, Advocates for R-2.
CORAM:
HON'BLE MR. JUSTICE AMIT BANSAL
AMIT BANSAL, J. (Oral)
1. The present petition has been filed challenging the order dated 9th
March, 2012 (hereinafter 'impugned order') passed by the erstwhile
Intellectual Property Appellate Board (hereinafter 'IPAB').
2. By way of the impugned order, the IPAB allowed the rectification
petition no. ORA/265/2010/TM/DEL/1994 filed by the respondent no.2 and
removed the petitioner's mark 'DAVIDOFF' bearing no.454875 from the
Register. It was held that the impugned mark was wrongly renewed long
after the statutory deadline for seeking renewal had expired. Thus, the mark
was treated to have lapsed.
3. Mr. Ranjan Narula, counsel for the Petitioner, submits that the
application for registration of the aforesaid mark in class 25 was filed on 30th
May, 1986 and would have been valid till 30th May, 1993. However, the
registration certificate for the said mark was only issued on 31st December,
1997.
4. Upon receiving the said certificate, the petitioner applied for renewal
of the mark on 29th June, 1998 for a period of seven years from 30th May,
1993 to 30th May, 2000 which was within the statutory period of six months
as evident from the letter dated 10th April, 2001 (Annexure P-14).
5. Thereafter, the petitioner further filed another application for renewal
of the mark on 16th April, 2001 for a period of seven years from 30th May,
2000 to 30th May, 2007. Thus, the petitioner had sought renewal of the mark
in a timely manner and the petitioner's mark had not expired at any point of
time.
6. He further submits that the mandatory provisions of Section 25 of the
Trade Marks Act, 1958 and Rule 64 of the Trade Marks Rules, 1959 were
not complied with by the Trade Mark Registry, as no notice was issued to
the petitioner under the Form O3 prior to the removal of the mark. Reliance
in this regard is placed on the judgment of a division bench of this Court in
Union of India v. Malhotra Book Depot, 2013 (54) PTC 165 (Del) DB.
7. The predecessor Bench vide order dated 1st March, 2024, directed the
Trade Mark registry to verify the issuance of Form O3 notice to the
petitioner by way of an affidavit.
8. In the order dated 13th August, 2024 it was noted that the record
pertaining to the Form O-3 notice of the Trade Mark Registry, Dwarka, New
Delhi is not available.
9. The aforesaid position was also confirmed in the affidavit dated 26th
September, 2024 filed on behalf of the Trade Marks Registry.
10. In Epsilon Publishing House Pvt. Ltd. v. Union of India & Ors.,
2017 (72) PTC 480 [Del], this Court took the view that the proprietor of a
registered mark must not be penalized for the lapse of the Registry in failing
to follow the procedure prescribed under the Act and the allied Rules. The
relevant extracts of the judgment are as follows:
"26. There may be merit in the contention that the Registrar has to follow
the procedure as prescribed; however, the essential question is not
whether the Registrar has any discretion in the matter, but, what are the
consequences of the Registrar not following the established procedure?
Plainly, in the facts of the present case, it is apparent that the Trademark
Registry has not adhered to the timelines as required. Surely, respondent
No. 3 cannot be penalised for the same and would be entitled to pursue its
application for renewal of its trademark."
11. It is settled position of law that issuance of O-3 notice is a mandatory
requirement which must be complied by the Trademark Registry. Reference
in this regard may be made to CIPLA Limited v. Registrar of Trade Marks
& Ors., 2013 (56) PTC 217 [Bom] [DB]; Union of India and Ors. v.
Malhotra Book Depot, (supra) and Gopal Ji Gupta v. Union of India, 2019
SCC OnLine Del 7670.
12. The aforesaid Judgments were relied upon by me in Promoshirt SM.
S.A. v. The Registrar of Trade Marks, W.P.(C)-IPD 28/2024 decided on
24th October, 2024 and Ashok Bhutani v. Registrar of Trademarks,
W.P.(C)-IPD 22/2024 decided on 27th September, 2024, wherein I had
issued directions for issuance of certificates of renewal in similar
circumstances.
13. Counsel for the petitioner submits that since all the aforesaid
judgments, which changed the legal position with regard to renewal of a
mark, came after the impugned order was passed by the IPAB, this aspect
did not come up for consideration before the IPAB.
14. In my considered view, in light of the legal position obtaining now on
the basis of the aforesaid judgments, the petitioner would be entitled to the
benefit of the same.
15. In the affidavit, the Trade Marks Registry has clearly admitted that it
does not have any records to show that a form O3 notice was issued to the
petitioner.
16. Accordingly, the present petition is disposed of with the following
directions:
a. The petitioner's mark 'DAVIDOFF' bearing trademark registration
no. 454875 is restored to its original number in the Register.
b. Respondent no.1 shall make necessary corrections in their database
with respect to the renewal status and renewal date of the trademark
application bearing no. 454875.
17. The Registry is directed to supply a copy of the present judgment to
the office of the Controller General of Patents, Designs & Trade Marks of
India on the e-mail- [email protected] for compliance.
AMIT BANSAL, J
APRIL 22, 2025
Vivek/-
